Intel Lawyers Again Go Too Far In Trademark Bullying

from the back-it-down dept

Chip giant Intel has a bit of a reputation for being a trademark bully at times, threatening or suing many companies just for having "intel" in their name somewhere -- including a travel agency and a jeans company. Now, before anyone brings it up, yes, as a trademark holder the law requires you to enforce your trademark against infringement, lest it become considered "generic" (such as xerox machines, kleenex tissues, aspirin and other brand names that became generic). But, the key in all of those generic situations was that the use was applied to things that directly competed with the original brand's products. People referred to other tissues as "kleenex" and it stuck. Intel's lawyers seem to go out of their way to find potential infringement where there obviously is none at all.

Paul Alan Levy alerts us to the latest such case, where Intel has sued the operators of the Mexico Watch newsletter, because its domain is LatinIntel.com. Of course, the reason for that is that it is using the commonly accepted abbreviation of "intel" as short for "intelligence." It's common shorthand, especially within government circles, to refer to gathered intelligence as simply "intel." The owners of the site explained this to Intel, and in return were given a boilerplate explanation about trademark law, insisting that since Intel's trademark is so valuable, it still has to stop others from using it -- even if they're in a totally different business, which is an interesting interpretation of trademark law, and one not supported by the courts in most cases.

More importantly, no one is going to look at LatinIntel.com and confuse it for the world's largest computer chip maker. No one is going to look at that site and wonder how come they can't order a Centrino processor. There's simply no confusion at all. Even worse, it appears that Intel's lawyers dragged out this situation far too long. They first contacted the site back in 2007, and the site's owner responded with a clear explanation of why the name was not infringing. Since then, there have been periodic bursts of contact from different Intel lawyers (it apparently seems to change each time), followed by months of silence, before a new group of lawyers starts pestering the site again. Finally, after more than two years of this back and forth, Intel sued Mexico Watch, even though it's not even close to competitive and any "moron in a hurry" (as the popular trademark test notes) would clearly know the difference between a site about Mexican politics and a company selling microprocessors.

Kleenex is not generic...

While many people continue to use "Kleenex" as a generic term for facial tissues, Kimberly-Clark goes to great lengths to protect the trademark from becoming generic. Kimberly-Clark has written to a number of magazines, newspapers, and authors asking for proper use of Kleenex as a brand name rather than a generic name. Furthermore, you will note that when other manufacturer's of facial tissues advertise, they are quite careful in how they use their trademark. Kleenex is far from generic when it appears in print or media.

I Was Confused

As soon as I heard “Mexico watch”, I thought it sounded like “Microsoft Watch” website, which covers the world’s biggest maker of software for Intel processors. As for “LatinIntel”, I immediately thought of “Latin lovers”, and there are indeed many people who just LOVE Intel and Microsoft.

So I agree, there is definitely a confusing similarity here, and Intel’s lawyers are justified in putting a stop to it.

Re: I Was Confused

As soon as I heard “Mexico watch”, I thought it sounded like “Microsoft Watch” website, which covers the world’s biggest maker of software for Intel processors. As for “LatinIntel”, I immediately thought of “Latin lovers”, and there are indeed many people who just LOVE Intel and Microsoft.

So I agree, there is definitely a confusing similarity here, and Intel’s lawyers are justified in putting a stop to it.

I now understand where the MORON part of moron in a hurry comes from...

oh, boy

intel has definitely gotten too big for their own good. they are so desperate to keep attention on them instead of their competition that they actually believe what they do is right.
their processors arent even good enough to warrant their behavior. (not trying to troll by the way)

Re: I Was Confused

Abundant examples

On the Web site http://www.intelfortheintelligent.com there is a long list of common usages of intel in its generic, public-domain, English-language sense. Intel simply cannot lay claim over an English language word as a mark. Apple Computer and Apple Corps can fight over music until their lawyers buy new Lexus for their kids, but the public can still go to the store and buy sweet tree fruit called ... "apple"

Re: Re: Kleenex is not generic...

You will note that "Kleenex" REMAINS a trademarked name for Kleenex brand facial tissues. In order for a name to remain trademarked, the owner has to show that the name has not become generic. Apparently Kimberly-Clark has been able to meet that standard.

Intel Lawyers Again Go Too Far In Trademark Bullying..

Anything I had to say about Intel would involve something very negative about their parents and those "blue" friggin mime characters from their commercials. I'll spare everyone from the vulgar Intel bashing, by saying let's just not go there.

Intel Lawyers Again Go Too Far In Trademark Bullying..

Anything I had to say about Intel would involve something very negative about their parents and those "blue" friggin mime characters from their commercials. I'll spare everyone from the vulgar Intel bashing, by saying let's just not go there.

Dove soap and Dove chocolate

Even though they both have dove in their names, the similarities end there. I don't know if they had a huge legal battle but when I see ads for the soap I don't get a sudden attack of my choco-fix or vice-versa.

Re: Dove soap and Dove chocolate

Unsure of what your point is. Dove is registered by Lever as a trademark for soap. Dove is also registered by Mars as a trademark for chocoloate. You can register the same name for multiple uses as long as there is no risk of confusion between the marks.

Speaking of confusion, U.S. trademark law was founded on the basis of unfair competition. There are numerous references to sailcloth manufacturers approaching Thomas Jefferson, lobbying him to pass a trademark law to prevent unfair competition from sailcloth manufacturers putting names of competitors on their products.

The trademark act of 1905 replace the "intent to deceive" language of the previous trademark act, related to unfair competition, with "likelihood of consumer confusion," effectively changing the original intent of trademarks in U.S. law.

However, someone finally woke up and realized that though consumer confusion was a potential risk, unfair competition still remained an issue, so the Lanham Act of 1946 restored the original concept of unfair competition, this time spelling it out for those who failed to realize that "intent to deceive" was related first to unfair competition and second to the potential for consumer confusion.

Indeed, the whole "consumer confusion" portion of trademark law, introduced in 1905, effectively exited trademark law after the Dilution Act of 1996, which said that marks could become so famous that any usage of the marks would evoke the name of the famous company. Thus, Disney and Coca-Cola or Coke will never be gracing the name of very many products that are not directly owned or licensed by Disney and Coca-Cola.

Kleenex may have "stuck," but it is not generic...

Per Mike:

"People referred to other tissues as "kleenex" and it stuck."

Well, guess what. Many people refer to copyright infringement as "stealing," and it definitely has stuck, probably by about the same number of people who incorrectly refer to Puffs brand facial tissues as "Kleenex."

Re: Kleenex may have "stuck," but it is not generic...

Kleenex is in the "tween" zone. Coke found itself in a similar zone until competitors realized that having Coke become genericized hurt them (for a while any cola was being referred to as "Coke;" no longer). Suddenly, everyone was emphasizing their brand names - including Coke.

Kimberly-Clark and competitors are in the same place. While consumers recognize the difference between Kleenex brand facial tissues and numerous competitors (the reason the trademark exists - it may be mildly generic in common use, but the brand recognition remains one of the strongest in the world, allowing Kimberly-Clark to keep their trademark), consumers have often used "Kleenex" to refer to any facial tissue. Kimberly-Clark and competitors are trying very hard to improve brand recognition to enhance the difference between Kleenex and other brands.

Think about it. The wife asks the husband to get a box of Kleenex at the store. Does the husband buy Scott's facial tissues or Kleenex brand facial tissues? I opt for the Kleenex. She asked for Kleenex, she gets Kleenex brand facial tissues.

Lawyers, guns, money ... but mainly lawyers

In David-v-Goliath cases like this, Goliath doesn't need to win but rather can just keep paying lawyers to keep the case alive until David goes broke. Unless Mexico Watch can get some support, the word intel will cease to be in the public domain and will become corporate property. It just ain't right.